Submission of Comments of J. Gregory Sidak Regarding Fair, Reasonable, and Nondiscriminatory Royalties and Injunctions for Standard-Essential Patents

Submission of Comments of J. Gregory Sidak Regarding Fair, Reasonable, and Nondiscriminatory Royalties and Injunctions for Standard-Essential Patents to the Chiteki Zaisan Kōtō Saibansho [Intellectual Property High Court of Japan]

A FRAND commitment is a contract between the SEP holder and the standard-setting organization (SSO), to which the implementer of the standard is a third-party beneficiary. The obligations arising from a FRAND commitment must be interpreted in accordance with the provisions of the FRAND contract and the intent of the parties when stipulating the terms of that contract. Most SSOs’ internal rules determine that the primary purpose of a FRAND commitment is to grant implementers access to the standard. A FRAND commitment thus contractually restricts some prerogatives of the SEP holder’s statutory rights. Most important, the SEP holder has a duty to make a FRAND offer to any implementer that wishes to access the standard. By making a FRAND commitment, the SEP holder agrees to forbear from its statutory right to exclude from the use of its SEPs any implementer that is willing to accept the SEP holder’s FRAND licensing terms.